Each
federal agency has developed its own patent
licensing policies and procedures to match
their individual missions. They also have
developed their own “boilerplate” licensing
agreements, and most make them available on
their web sites. For example,
NIST provides a variety of its
nondisclosure and licensing boilerplates.
Similarly,
NIH provides a number of its
agreement models and application forms.

But the “boilerplate” models are
only a starting point, as each consummated agreement
is a tailored document negotiated to fit the
individual needs and circumstances of both the
commercial enterprise and the government agency.
While the process of obtaining a license can take
twists and turns, the primary elements are:

Company identifies a
potential technology in a government
lab.

The lab supplies
limited, non-confidential information.

The company becomes
more certain of its interests and
expresses its desire for more
information.

The lab supplies
its boilerplate draft of a
nondisclosure agreement.

After negotiation of
terms/conditions, both parties sign the
nondisclosure agreement.

The lab then provides
proprietary information about the
licenseable technology for evaluation.

The company then
affirms its interest in licensing the
technology.

The company submits
an application for a license, including
information about itself, a business
plan for commercialization of the
technology, potential marketing
information and expected financial
values of the technology.

Assuming the lab
accepts the application, the lab and the
company discuss terms and conditions of
the license. On a case-by-case basis,
the terms and conditions will vary,
depending on multiple factors such as
the scope of the rights granted, the
size of the potential market, and the
time and financial investment required
by the licensee to bring the product to
market.

The lab drafts the
license agreement.

The company and lab
continue to negotiate the terms and
conditions of the license agreement
until they are mutually satisfied.

The lab and the
company sign the licensing agreement.

The company
commercializes the technology under the
terms and conditions of the agreement.

The lab monitors
performance of the agreement.

Labs/agencies
generally provide on their websites
detailed instructions for obtaining rights
to license their technologies. For example,
NIH provides the following flowchart with
many links to detailed information:

STEP 1:
Select the area of technology that interests you. You can choose from:

Cancer

Central
Nervous System

Dental
Technology

Devices/Instrumentation

Gene-Based
Therapies

Infectious
Diseases

Internal
Medicine

Miscellaneous

Ophthalmology

Research
Materials

STEP 2:
Find the specific technology you would like to
license.
To do so, review the complete listing of abstracts online.

STEP 3:
Select the type of license you requireFor more information, read about the various
types of licenses available.

STEP 4:
Contact a Licensing SpecialistNames and contact information are indicated on
each abstract online. Click to view a sample
abstract. See the latest list of abstracts online.

STEP 5: Fill out a Formal Application for a
License
Click to download the Application for License
A Confidential Disclosure Agreement is required for
unpublished patent applications.

STEP 7: Negotiate Licensing Terms
Speak with the appropriate Licensing Specialist
listed on the abstract. Names and contact
information are indicated on each abstract online.

STEP 7.1:
If You Want a Nonexclusive License
Complete negotiations for a Nonexclusive Patent
License Agreement.

STEP 7.2:
If You Want an Exclusive License
Complete negotiations for an Exclusive Patent
License Agreement
OTT will publish a notice of your application in the
Federal Register.
Other organizations have 60 days to submit comments
or apply themselves.